Fromson v. Advance Offset Plate, Inc., s. 84-1542

• Decision Date: 21 February 1985
• Docket Number: Nos. 84-1542,84-1553,s. 84-1542
• Citation: 225 USPQ 26,755 F.2d 1549
• Parties: Howard A. FROMSON, Appellant/Cross-Appellee, v. ADVANCE OFFSET PLATE, INC., Appellee/Cross-Appellant. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1549

755 F.2d 1549

225 U.S.P.Q. 26

Howard A. FROMSON, Appellant/Cross-Appellee, v. ADVANCE OFFSET PLATE, INC., Appellee/Cross-Appellant.

Appeal Nos. 84-1542, 84-1553.

United States Court of Appeals Federal Circuit.

Feb. 21, 1985.

John E. Lynch (argued), Felfe & Lynch, New York City, for appellant, cross-appellee.

Arthur F. Dionne (argued), Fishman & Dionne, Windsor, Conn., for appellee, cross-appellant.

Before MARKEY, Chief Judge, DAVIS, Circuit Judge, and NICHOLS, Senior Circuit Judge.

MARKEY, Chief Judge.

Consolidated appeal and cross appeal from a judgment of the United States District Court for the District of Massachusetts, declaring claims 1, 4, 6, 7, 12, and 16 of United States Patent No. 3,181,461 (the '461 patent) invalid and infringed. The judgment of invalidity is reversed; the judgment of infringement is affirmed.

Background

The art of lithography is premised on the immiscibility of greasy substances and water. As initially conceived and practiced, lithographic printing employed a stone substrate, the smoothed surface of which was "hydrophilic", or water-attracting. The image desired would be traced onto the substrate with a greasy "hydrophobic", or water-repellant, substance. Thereafter, the stone surface would be successively treated with water and ink. The non-image stone substrate, being hydrophilic, attracted water, and thus repelled the succeeding treatment of ink which, being essentially "greasy", is hydrophobic. The greasy image area, however, repelled the initial treatment with water and, subsequently, attracted ink. The stone surface was then pressed to yield an image.

In the last century, photographic means was introduced for creation of the image on the printing surface, rendering unnecessary the actual drawing with a greasy substance. The first photo-lithographic plates were produced by coating a plate with a light-sensitive composition of egg white and potassium dichromate, creating "albumin plates" which were then exposed to light through a negative. In the 1930's, "deep-etch" plates were introduced. They were dichromate coated to form a stencil eventually removed in developing the plate. Following World War II, diazonium salts, or "diazos", were used as light-sensitive coatings.

The smoothed stone substrate of the old art has been replaced in modern lithographic printing with lighter and more easily handled materials. Initially, grained or roughened zinc was employed, then aluminum found wide acceptance.

In modern photo-lithographic printing, a substrate is prepared, light-sensitized, exposed, and then developed. A post-development treatment may be applied to highlight the image so that the printer may see the prepared printing surface. The plate is then mounted on a roller to receive successive water and ink treatments. The prepared and treated surface is then used to print, directly or with an offset mechanism.

United States Patent No. 2,714,006 to Jewett (the Jewett patent) was the dominant photolithographic plate before the '461 patent issued. The Jewett patent teaches preparation of a presensitized lithographic plate composed of an aluminum base treated with a solution of an alkali metal silicate, preferably a relatively dilute solution of sodium silicate, by dipping the aluminum surface in the silicate solution to form an insoluable, hydrophilic silicious surface which is then treated with a light-sensitive diazo coating. The coated plate is exposed to light through a negative and afterwards desensitized by wiping with a gum arabic solution to dissolve and remove the diazo that did not react to light.

A. The '461 Patent and Claims in Dispute

The '461 patent issued to Howard A. Fromson on May 4, 1965, upon application Serial No. 282,810, filed May 10, 1963. The '461 patent contains 11 claims to a photographic plate for use in planographic printing and 5 claims to a process for its manufacture. In planographic printing, as opposed to raised letterpress or engraving printing, image and background are in the same plane on the printing plate surface and the principles of lithography are employed.

Claims 1, 4, 6, 7, 12, and 16 are at issue in this appeal. Claim 6 (here reproduced in subparagraph form) is typical:

6. A sensitized photographic printing plate comprising an aluminum sheet having a surface which has been treated to form an aluminum oxide coating on said surface,

a water-insoluble, hydrophylic, organophobic layer on said sheet resulting from the reaction of the aluminum oxide coating and an alkali metal silicate applied to said coating, and

a water-soluble, light-sensitive diazo resin coating over said layer having the properties of being water-soluble, hydrophobic, and organophilic upon exposure to ultra-violet light.

Claim 1 is directed to a sensitized photographic printing plate and is broader than claim 6 in its description of the light-sensitive coating. Claim 4 is specific to the use of anodizing to form the sealed aluminum oxide coating, sodium silicate, and certain water-soluble, light-sensitive coatings. In claim 7, a water-insoluble, image forming coating is exposed in the non-image areas of the plate.

Process claim 12 (here reproduced in part in subparagraph form) calls for:

applying to an aluminum sheet having a coating of aluminum oxide, a water-solution of an alkali metal silicate to cause the silicate to react with the aluminum oxide to form a water-insoluble, hydrophylic, organophobic layer on said sheet,

drying the layer, and

applying over the dry layer a light sensitive coating having one solubility in relation to a solvent in a state before exposure to light, said light-sensitive material being soluble in said solvent in one of said states and being insoluble in said solvent and in water, hydrophobic and organophilic in its other state.

Claim 16 depends from claim 12 and specifies a light-sensitive coating of diazo resin.

B. Suit

In 1976, Fromson sued Advance Offset Plate, Inc. (Advance) for direct and contributory infringement. Advance denied infringement, asserted invalidity, and counterclaimed for fraud, misuse, antitrust violations, and unfair competition.

On August 18, 1978, Fromson sued three of Advance's customers in separate actions: News Publishing Company of Framingham; Newspapers of New England, Inc.; and Graphcoat, Inc. In a May 30, 1980 Memorandum and Order, the district court consolidated the suits and separated the validity and infringement issues from those of fraud, misuse, antitrust violations and unfair competition.

C. Proceedings before the Patent and Trademark Office

On April 19, 1979, Fromson applied in the United States Patent and Trademark Office (PTO) for a declaration under the "no defect" proceeding established by 37 CFR 1.175(a)(4). The district court denied Fromson's motion to stay the court action until PTO proceedings on the application were concluded.

Advance participated actively in all stages of the proceeding, as did protestors Imperial Metal and Chemical Company, E.I. Du Pont de Nemours & Company, and Western Litho Plate & Supply Company. Advance made eleven separate submissions attacking validity of the '461 patent for (1) obviousness in view of 17 prior art patents, (2) prior knowledge and sale, (3) non-compliance with Sec. 112, and (4) fraud on the patent office. The record discloses 52 United States patents, 15 foreign patents, and 17 literature references cited to the Examiner.

The Examiner considered and responded to each protestors' allegation in an initial decision and subsequent decisions on reconsideration in response to requests and additional submissions by the protestors. Each argument of the protestors was rejected with explanation.

Respecting the allegations that the invention would have been obvious, for example, the Examiner said "[n]one of the references cited individually or collectively [sic] clearly teach [sic] or make [sic] obvious the formation of an oxide layer on an aluminum base followed by a silicate treatment followed by application of a light-sensitive material." Respecting process claims 12 The Examiner referred protestors' allegations of "fraud on the patent office" to the Commissioner. On December 22, 1980, Assistant Commissioner Tegtmeyer concluded that "the evidence is not 'clear and convincing' that applicant practiced or attempted any 'fraud' on the Office or 'violated any duty of disclosure' through 'bad faith or negligence' ".

                and 16, the Examiner concluded that the references "fail to teach this process and do not clearly make it obvious to the mechanic having ordinary skill in the art."    The Examiner further held that "[w]hile the concept of treating the aluminum oxide coating is clear, the specific combination under consideration is not specifically taught.  The prior art fails to show clear error in the prior determination of patentability."    In a second decision responding to protestors reiterations, the Examiner said "As was previously stated, the prior art is extremely close to the invention claimed.  It teaches all around it, but it does not quite hit the target."
                

D. Trial

On February 11, 1983, following a 7 day trial (June 29-July 9, 1982), the district court held (1) that the claims of the '461 patent, when read in light of the specification and the prosecution history, must be interpreted as requiring that the water-insoluable, hydrophilic, organophilic layer be the product of a chemical reaction between the aluminum oxide coating and the alkali metal silicate, and (2) that this product must be a compound having physical properties different from those of its constituents. Finding no such "reaction" in the preparation of Advance's photographic plates, the district court entered a judgment of noninfringement, but did not reach the issue of validity. 219 USPQ 83 (D.Mass.1983).

This court vacated the judgment, 720 F.2d 1565, 219 USPQ 1137 (Fed Cir.1983), because it rested on an error of law in interpreting the claims of the...